RAJIV SHAKDHER, J 1. By the present order, I propose to dispose of the captioned applications filed by the plaintiffs and the defendant. While the plaintiffs have filed an interlocutory application (hereinafter referred to in short as-IA’) being IA No.15565/2009 under the provisions of Order 39 Rule 1 and 2 of the Code of Civil Procedure, 1908 (in short CPC‘), the defendant has filed an IA under the provisions of Order 39 Rule 4 of the CPC being IA No. 16243/2009.

1.1 At the heart of the dispute, is the issue concerning the use of the word mark Kaya’. The defendant, who is essentially running a beauty salon in Ranchi and Dhanbad under the name and trading style of The Kaya Beauty Salon & Cosmetics’ – asserts her right to use the word mark KAYA’, as part of her trading style and name in respect of which, the plaintiffs claim proprietary rights.

2. In order to appreciate the rival submissions in this regard, the following brief facts may be noticed:-

PLAINTIFFS’ CASE

2.1 Plaintiff no. 1 is a company which was incorporated on 13.10.1988 with the name Marico Foods Limited. After a change of name in 1989, and thereafter in April, 2005 it acquired the present name i.e., Marico Limited. Similarly, plaintiff no.2, which is a subsidiary of plaintiff no.1 was incorporated on 27.03.2003 with the name Kaya Beauty Services Limited’. The plaintiff no.2 underwent, as in the case of plaintiff no.1, a change of name in April-October, 2003, till finally in December, 2007, it acquired the present name, which is Kaya Limited’. The plaintiff no.1 claims to be in the Fast Moving Consumer Goods (in short FMCG‘) business while, plaintiff no.2 claims that it provides services in the area of beauty and wellness’.

2.2 It is further claimed by plaintiff no.1 that it is a registered proprietor of several trademarks since 2002 which consist of the word Kaya’. Illustratively reference may be had to the following registrations in various classes in favour of plaintiff No.1.

(i) MARICO’S KAYA (Class 5); (ii) KAYA SKIN CLINIC (Class5); (iii) KAYA Class 10); (iv) KAYA SKIN CLINIC (Class 10); (v) MARICO‘S KAYA (Class10); (vi) MARICO‘S KAYA (Class16).

2.2.1 The aforesaid registrations have been operative since October-December, 2002.

2.3 Similarly, plaintiff No.2 has acquired the following registrations:-

(i) KAYA GLOW (Class 16); (ii) KAYA GLOW (Class 3); (iii) KAYA SILKY LEGS NITE (Class 42); (iv) KAYA SKIN TALK (Class 41); (v) KAYA BACKLESS NIGHT (Class 41); and (vi) KAYA BACKLESS NIGHT (Class 42);

2.4 As per plaintiff no.2 except for the first two registrations KAYA GLOW‘ in Class 16 and Class 3 which are valid since 06.05.2003, the rest relate back to 2005. It is further claimed by the plaintiffs that applications for registrations of the trademark Kaya’ in Class 3 and 16 are pending. Plaintiffs have also alluded to the fact that trademark Kaya’ is registered and/or pending registration in number of countries such as Bahrain, Kuwait, Qatar, Oman, U.A.E., Saudi Arabia and Egypt. .

2.5 Plaintiff no.1, thus, has claimed that the trademark Kaya’ has been used by it since 2002 in relation to a wide variety of products which includes cosmetics (non-medicated), essential oils, attars, detergents (not for industrial use), incense and incense sticks, shaving creams and shaving soaps, shampoos, soaps etc., while plaintiff No.2 which was incorporated, as noted above, in 2003 is not only using the trademark Kaya’ as part of its corporate name but also using the mark extensively in relation to cosmetics, hair oils, hair lotions, skin care and health care preparations. It was also averred that plaintiff no.2 provides body and personal care services through its clinics and salons under the brand/mark Kaya Skin Clinic’. It is claimed that it has a clientale of over 3,50,000 customers, who are provided services through 73 clinics operating under the name Kaya’ in 19 cities in India, in addition to 9 such clinics, in the Middle East. The plaintiff no.2 claims that over a peri

Click Here to Read the rest of this document